So, you have invented an automotive product that is useful, original and novel. Now as the owner you need a patent to exclude others from making, using, selling, and importing your invention.

Below we have listed eight top tips you should consider before you file for an automotive patent.

  1. Only patent what you need to

A narrow patent that covers something that competitors must have is a strong, commercially useful tool and will be cheaper and quicker to obtain, than a broad patent.  Remember, you are trying to patent what a competitor might need to do in order to compete effectively.  You are not necessarily trying to cover your own product.

  1. Choose territories carefully

Costs will scale with territorial coverage so decisions on territory have a significant impact on costs.  You will only need protection in your key selling markets and possibly a few likely manufacturing markets where a competitor might choose to manufacture.  In the automotive field you probably only need to cover the US, UK, Germany, France, Japan and China.  For an important invention, you might also consider Spain, Italy, and South Korea.  Effective protection for Africa in this field can often be achieved with just a South African filing.  If you have control of those markets, an OEM is unlikely to make a special vehicle just for the remaining markets, so you will have gained effective worldwide control.

  1. Remember to allow for renewal costs in your budget

In a mature portfolio, renewing patent rights by paying the mandatory Government renewal fees will probably cost more than you will be spending protecting new ideas.  Keep this cost under control by regular review of your older IP rights – licence, sell or cull those you aren’t using.

  1. Easily watch your competitors

Consider using patent publications as a source of competitor information.  They are well-indexed and easily searchable online.

  1. Secrecy and making sure to file at the right time

For most territories, it is essential to file a patent application before public disclosure of the underlying idea.  Consider using non-disclosure agreements to keep the idea confidential during development, prototyping and testing.  Remember that testing in a place that is open to the public or even visible via a perimeter fence may result in accidental publication of your idea.  Official vehicle testing facilities usually have secrecy mechanisms in place.  At the other extreme, the public highway definitely does not!

  1. Be careful about ownership, particularly in joint ventures

Syndicates with multiple parties carrying out different parts of a single development project are common in this field.  Be sure you understand who owns what IP rights as you enter the collaboration and who owns what parts of the work which are developed during the collaboration.  Be sure also to understand what you are free to do with the technology after the project finishes – you may have no freedom to use it.  Sub-contracting work to third-parties has similar hazards.  This can usually all be resolved with suitable contracts but remember that these are much easier negotiated at the beginning, than at the end.

  1. Consider doing patent searches

Searches can be useful before you start development as the materials may help spark a streak of your own innovation and may also help you avoid dead ends.  Be careful of course not to copy material that has granted, in-force patents covering it.

Searches are also useful to avoid wasting time and money patents that will never be allowable with a commercially useful scope because the idea is broadly not new.

  1. Be clear what you want

Before filing a patent application, be clear what you will do with it.  How will it add value?  Will you licence it or perhaps sell it with the business division?  Will it be used to gain and justify external investment?  Will it be used in a cross-licence to gain access to someone else’s technology?  Will you expect to enforce it against others?  Will you do this only if they attack you first and thus use it defensively?


Andrew Mackenzie

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